Two fast-food giants, McDonald’s and Hungry Jack’s, faced off in a dispute that tested the boundaries of trade mark law and consumer protection. The Federal Court’s decision in McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412 is one of the most high-profile trade mark and consumer law battles in recent years. It brings together questions of brand imitation, cheeky marketing, and the limits of deceptive similarity under Australian trade mark law.
Although McDonald’s succeeded in proving that Hungry Jack’s made a misleading claim about the meat content of its burgers, the Court rejected the allegation of trade mark infringement. The decision shows how reputation, intention, and consumer perception interact under the Trade Marks Act 1995 (Cth) and the Australian Consumer Law, and why even global brands must work within the precise boundaries of statutory protection.
Background of the dispute
Both McDonald’s and Hungry Jack’s have traded in Australia since the early 1970s, serving millions of burgers every year. McDonald’s owns registered trade marks for “BIG MAC” and “MEGA MAC”, filed in 1973 and 2013 respectively. Hungry Jack’s, a long-time franchisee of Burger King Corporation, launched its own “BIG JACK” burger in early 2020, followed shortly by a larger “MEGA JACK” version.
McDonald’s claimed that these names infringed its “BIG MAC” and “MEGA MAC” trade marks under section 120 of the Trade Marks Act 1995 (Cth), arguing that the use of “BIG JACK” and “MEGA JACK” was deceptively similar and intentionally designed to remind consumers of the iconic “BIG MAC.” It also alleged that Hungry Jack’s “25% more Aussie beef” advertisement was misleading under section 18 of the Australian Consumer Law.
Hungry Jack’s denied infringement, maintained that its use of “BIG JACK” was legitimate, and cross-claimed to remove McDonald’s “MEGA MAC” mark for “non-use”. The case also raised an important contemporary issue: how the High Court’s reasoning in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 affects the test for deceptive similarity.
The key issues before the Court
Justice Burley of the Federal Court was asked to determine the following issues-
- Whether Hungry Jack’s use of “BIG JACK” and “MEGA JACK” infringed McDonald’s “BIG MAC” and “MEGA MAC” trade marks under section 120 of the Trade Marks Act 1995 (Cth)?
- Whether the “BIG JACK” mark itself should be cancelled under sections 44, 60 or 88 of the Act?
- Whether McDonald’s “MEGA MAC” mark should be removed for non-use under section 92(4)(b)?
- Whether Hungry Jack’s advertising claim that the BIG JACK contained “25% more Aussie beef” than the BIG MAC breached section 18 of the Australian Consumer Law by misleading or deceiving consumers?
Evidence before the Court
The Court heard extensive evidence from marketing executives, brand managers, food scientists, and solicitors on both sides.
McDonald’s relied on its long-standing marketing materials for the BIG MAC, its consistent use of the mark, and comparative testing between its patties and Hungry Jack’s. It argued that the phonetic similarity between “MAC” and “JACK” was intentional and likely to cause confusion, particularly since both products were similar in build and price and sold through the same channels.
Hungry Jack’s countered that “BIG” is a common descriptive word and that consumers would associate “JACK” with its own established brand identity rather than with McDonald’s. Its Chief Marketing Officer, Scott Baird, admitted there was an “element of cheekiness” in naming the burger “BIG JACK,” but denied any intention to mislead consumers. He said the choice was part of Hungry Jack’s internal branding strategy, linking the burger to its corporate identity and to “Jack’s Café,” another branch of its brand family.
Deceptive similarity and the “notional consumer”
Section 120(1) of the Trade Marks Act 1995 (Cth) provides that a person infringes a registered trade mark if they use a sign that is “substantially identical with, or deceptively similar to” the registered mark in relation to the same goods. Under section 10, a mark is deceptively similar if it “so nearly resembles” another mark that it is likely to deceive or cause confusion.
Justice Burley’s reasoning followed the High Court’s approach in Self Care v Allergan, which clarified that the test for deceptive similarity is objective and artificial. It is applied from the perspective of a notional consumer with an imperfect recollection of the registered mark, without taking into account any real-world reputation or brand awareness.
That meant McDonald’s couldn’t rely on the immense fame of the BIG MAC to support its case. The question was purely whether “BIG JACK” was deceptively similar to “BIG MAC” when each was considered as a mark in isolation, stripped of the parties’ brand reputations.
Comparing BIG MAC and BIG JACK
Justice Burley observed that both marks consist of two short, punchy words of one syllable each. The shared word “BIG” was plainly descriptive and common to the fast-food industry, i.e. phrases like “BIG CARL,” “BIG QUEENSLANDER,” and “BIG BOY” were already in use. What remained distinctive in each mark were the second words: “MAC” and “JACK.”
“MAC,” the Court noted, might be seen as an invented or uncommon name, while “JACK” is a familiar personal name with everyday meaning. Both end with a hard “ack” sound, creating phonetic similarity, but their different opening sounds (“m” versus “j”) and the recognizable identity of “Jack” set them apart.
That said, Justice Burley concluded that while the marks share a rhythmic and structural resemblance, they are not deceptively similar. A typical fast-food customer is likely to pay reasonable attention to what they are ordering, especially since hamburgers are consumed immediately after purchase. Such consumers, he held, were unlikely to be confused or to assume a connection between the two brands.
As a result, the Court found that Hungry Jack’s had not infringed McDonald’s BIG MAC or MEGA MAC trade marks under section 120(1).
The “cheekiness” factor and intention
McDonald’s argued that Hungry Jack’s intention was to evoke the BIG MAC and ride on its reputation. It pointed to Mr Baird’s own admission that the name had an “element of cheekiness” and that he expected consumers to “call to mind” the BIG MAC when they saw BIG JACK.
The Court accepted that the name choice was deliberately playful, even provocative, but emphasized that intention alone does not establish deceptive similarity. The key test remains whether the resemblance between the marks would cause actual confusion among consumers.
Justice Burley referred to the long-standing principle from Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937), where the High Court held that dishonest intent may support a finding of deception, but cannot substitute for it. In this case, the judge found no evidence that Hungry Jack’s set out to mislead, only that it aimed to compete head-on in a “cheeky” marketing manner typical of the rivalry between the two brands.
Validity and “non-use” challenges
McDonald’s also sought to cancel Hungry Jack’s BIG JACK registration under sections 44, 60, and 88 of the Act, arguing that the mark was too close to its own and that McDonald’s reputation should prevent registration. The Court rejected these grounds, confirming that the BIG JACK mark could remain on the register and providing Hungry Jack’s an additional defense under section 122(1)(e).
On the other hand, Hungry Jack’s cross-claimed that McDonald’s MEGA MAC mark should be removed for non-use. The Court accepted that McDonald’s hadn’t used the mark across the full list of goods covered, but exercised discretion under section 101(3) to allow it to remain registered for hamburgers and related goods, removing only peripheral items like biscuits, cakes, and sauces.
Misleading and deceptive conduct stating “25% more Aussie beef”
Where McDonald’s did succeed was in its Australian Consumer Law claim. Hungry Jack’s ran a campaign boasting that its BIG JACK contained “25% more Aussie beef” than McDonald’s BIG MAC.
McDonald’s commissioned independent laboratory testing of hamburger patties from multiple outlets in Melbourne and Brisbane. The results showed that the BIG JACK’s meat content varied significantly and did not consistently contain 25% more beef by weight.
Justice Burley found that the representation was misleading and deceptive under section 18 of the Australian Consumer Law. Even though some variations were possible due to preparation differences, the overall claim implied a consistent factual comparison that wasn’t true. Hungry Jack’s had therefore contravened consumer protection law, though the Court deferred questions of penalties and corrective orders pending further submissions.
The precedent set in the case of “Self Care v Allergan”
This case is also one of the first major applications of the High Court’s Self Care IP Holdings v Allergan Australia Pty Ltd. decision (Read our report on this here). Before this, courts sometimes considered the reputation of the registered trade mark when assessing deceptive similarity. The High Court made clear that reputation is irrelevant under section 120(1); the focus is purely on the notional comparison of marks.
Justice Burley followed that reasoning closely. By isolating the marks from their reputational context, the decision shows how trade mark protection under the Trade Marks Act is deliberately narrow. A well-known brand can’t claim infringement just because consumers might “think of” it when seeing a rival’s mark, i.e. the question is whether confusion about origin is likely.
This narrow approach may frustrate global brand owners, but it reflects a broader judicial preference for certainty in trade mark registration and for limiting monopolies to the precise scope of what is registered.
Takeaways for brand owners and advertisers
The McDonald’s v Hungry Jack’s ruling carries valuable lessons for anyone managing brands or advertising campaigns in Australia.
Firstly, distinctiveness still matters more than reputation. A famous mark will not automatically enjoy wider protection under section 120(1). Registration is what counts, not brand recognition.
Secondly, context is key but limited. The Court considered the real-world manner in which burgers are bought, i.e. quick service, visual menus, low cost, and held that such consumers are not easily confused. Businesses should expect courts to focus on practical consumer behavior rather than hypothetical assumptions.
Thirdly, marketing bravado has its limits. While cheeky comparisons and competitive advertising are not automatically unlawful, factual misrepresentations (like the “25% more Aussie beef” claim) will breach consumer law. Even where rivalry is expected, honesty about product claims remains essential.
That said, lastly, intention to imitate is not enough. The law protects against confusion, not competition. Unless a mark is likely to deceive or cause confusion, courts will hesitate to extend trade mark monopolies to cover mere echoes or wordplay.
Conclusion
The clash between BIG MAC and BIG JACK was never just about burgers. It was about how far one business can go in mimicking another without crossing the line into infringement or deception.
Justice Burley’s decision strikes a pragmatic balance, i.e. it protects consumer clarity and factual accuracy without stifling healthy competition or playful branding. For McDonald’s, the ruling is a reminder that reputation cannot replace distinctiveness. For Hungry Jack’s, it is a partial victory tempered by the finding of misleading advertising.
That said, for brand owners generally, the case shows a simple truth, i.e. clever marketing may grab attention, but it cannot bend the boundaries of trade mark law or consumer protection. In the marketplace, as in the courtroom, what ultimately matters is not how loud the brand shouts, but how truthfully it speaks.
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